Appeal from the United States District Court for the Eastern District of New York in No. 06-CV-6336, Chief Judge Carol Bagley Amon.
STEPHEN N. WEISS, Law Office of Stephen Norman Weiss, of New York, New York, argued for plaintiff-appellant. Of counsel on the brief was EDMUND J. FERDINAND, III, Ferdinand IP, LLC, of Westport, Connecticut.
CHARLES F. SCHILL, Steptoe & Johnson LLP, of Washington, DC, argued for defendant-appellee. With him on the brief were WILLIAM KARAS, CAROL GOSAIN, PAUL D. LALL, and STEPHANIE L. ROBERTS.
DANA KAERSVANG, Attorney, Appellate Staff, Civil Division, United States Department of Justice, of Washington, DC, argued for amicus curiae United States. With her on the brief were STUART F. DELERY, Assistant Attorney General, and SCOTT R. MCINTOSH, Attorney.
DAN L. BAGATELL, Perkins Coie LLP, of Phoenix, Arizona, for amicus curiae Airlines for America.
Before PROST, Chief Judge, NEWMAN and HUGHES, Circuit Judges.
Hughes, Circuit Judge.
IRIS Corporation brought suit in district court, alleging that Japan Airlines Corporation committed patent infringement by examining the electronic passports of its passengers within the United States. Because the allegedly infringing acts were carried out " for the United States" under 28 U.S.C. § 1498(a), we affirm the district court's decision to dismiss IRIS's complaint.
IRIS owns U.S. Patent No. 6,111,506 (the '506 patent), titled " Method of Making an Improved Security Identification Document Including Contactless Communication Insert Unit." The '506 patent discloses methods for making a secure identification document containing an embedded computer chip that stores biographical or biometric data. '506 patent col. 20 ll. 11-64.
Japan Airlines Corporation (JAL) examines passports according to federal law, including the Enhanced Border Security Act, 8 U.S.C. § 1221 et seq., the Visa Entry Reform Act of 2002, 19 C.F.R. § 122.75a(d), and certain international treaties. According to IRIS, some of these passports are made using the methods claimed in the '506 patent.
IRIS sued JAL for patent infringement in the Eastern District of New York, alleging that JAL infringed the '506 patent under 35 U.S.C. § 271(g) by " using . . . electronic passports in the processing and/or boarding of passengers . . . at . . . JAL services passenger check-in facilities throughout the United States." J.A. 74. JAL moved to dismiss IRIS's suit for failure to state a claim upon which relief can be granted. See Fed.R.Civ.P. 12(b)(6). Among other things, JAL argued that federal laws requiring the examination of passports conflict with the patent laws and therefore exempt JAL ...